The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit for the alleged infringement of patent No. 2,032,786 issued to John M. Aufiero, assignor to E.A. Laboratories, Inc., for heater dated March 3, 1936, on an application filed June, 19, 1934.
The plaintiff, E.A. Laboratories, Inc., is a New York corporation engaged in the manufacture and sale of automobile accessories, and has its factory and offices in Brooklyn, N.Y., within the Eastern District of New York.
The defendant, Smith & Gregory of New York, Inc., is a retail selling organization for automobile accessories maintaining a place of business within the Eastern District of New York. It is a distributor of automobile heaters alleged to infringe and which are manufactured by Tropic-Aire, Inc., of Minneapolis, Minn., a Delaware corporation.
Tropic-Aire, Inc., is openly defending this action on behalf of its customer, the defendant, Smith & Gregory of New York, Inc.
The defendant interposed an answer setting up the defenses of invalidity and noninfringement.
On the trial the defendant was allowed to amend its answer by setting up, as an additional ground of invalidity of the patent in suit, that the patentee, John M. Aufiero, was not the original inventor thereof but that, on the contrary, the invention, if any, was made by Mr. Toepel.
The patent in suit relates to hot water heaters for automobiles.
The hot water heaters of the type sold by the plaintiff and defendant, and claimed to be covered by the patent in suit, are constructed of a core which is in effect a miniature radiator of the type located in front of the automobile engine to cool the water in the circulating system. This core is inclosed in a casing to prevent the radiation of heat therefrom, and the casing, in turn, has shutters or heat deflectors that can be opened to any desired position. A small electric fan is provided behind the heater. As air is blown across the core, it is heated, and the shutters or deflector plates send this heated air in whatever direction suits the comfort of the user. By shutting off the fan and closing the shutters, or deflector plates, very little heat is given off by the heater. The heating casing has supporting brackets by means of which the heater is mounted. The heater is so constructed and designed as to be mounted within a car body in either a vertical or horizontal position.
Both plaintiff and defendant sell most of their heaters to individual car owners to be installed as extra equipment, as only a relatively small number are installed by car manufacturers.
The first heaters manufactured and continuing through 1933 had a core with headers at each end, a water inlet pipe connected to the center of one of the headers, and a water outlet pipe connected to the center of the other of the headers. The heater was designed to be installed with the headers at the top and bottom, or in what has been referred to in the record as a vertical position. Flexible tubing coupled the heater to the water cooling system of the car, and the hot water in that system, in turn, circulated through the heater.
On the first appearance of heaters of this type car bodies provided ample space on the dashboard for installation in the, so called, vertical position; but as stream lining and refined car designs came into vogue it became difficult to find in certain cars space on the dash to accommodate a vertically arranged heater, and the heater was mounted on its side. A trial of the heater mounted horizontally, that is, on its side, showed that pockets of air collected in the heater cores above the level of the inlet and outlet openings, greatly impairing its efficiency and in some instances of pronounced air-locks, causing it to cease functioning, and rendering it useless for the purpose intended. Due to the additional accessories designed for mounting on the dashboard of a modern car, to make a heater commercially acceptable it must be designed for universal mounting, and with comparative flexibility of mounting.
In the present satisfactory construction the heater is provided with bracket mountings, by which the heater will be supported in either a vertical or horizontal position, and with inlet and outlet openings positioned in diagonally opposite corners of their respective headers, thus, regardless of the position of mounting, causing them to remain at the upper and lower ends of the heater in different horizontal planes.
This suit is based on only one claim of the patent in suit, that is, claim 8 which reads as follows:
"8. A heater structure to be mounted to have its parts extend in given directions or to have those parts axially turn in directions at right angles to the given directions, and such heater structure including a pair of spaced heads, a heat distributing structure interposed between and connected to said heads, said heads -- with said heater structure disposed in one position -- extending in different horizontal planes, and one of said heads being formed with an opening adjacent its left hand end while the other of such heads is formed with ...